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District court finds photograph was neither work for hire nor joint work, and that failure to plead defense of license waived defense.

Plaintiff Lelanie Foster, a freelance photographer, conducted a photo shoot for JJ Eyelashes, a business that produces silk eyelash extensions and owns several salons at which those eyelashes are made available for sale and custom fittings. JJ Eyelashes is owned by defendant Lashpia Corp., which employs defendants May Lee and Ericka Rodriguez. Although the initial purpose of the shoot was to generate photographs for use at JJ Eyelashes salons and on its website, Foster verbally agreed to the use of a retouched version of one of her photographs in a small-scale advertisement in Allure magazine, and agreed that the photograph would be Lashpia’s property for use in its marketing campaign. Several months later, the photograph appeared in a large-scale Allure advertisement as well as on a digital billboard in Times Square. Unable to reach an agreement with Lashpia regarding licensing fees, Foster registered a copyright in the work and filed suit for copyright infringement shortly thereafter. Defendants asserted as affirmative defenses that the photograph was a joint work among Foster, Lee, and Rodriguez, and was a work for hire by Lashpia—but failed to plead that Foster had granted them a license to use the photograph. Foster moved for partial summary judgment on defendants’ liability for infringement and defendants moved for partial summary judgment on Foster’s entitlement to statutory damages and attorney’s fees, and on Lee and Rodriguez not being personally liable for infringement.

The court granted Foster’s motion in part and awarded summary judgment to Foster as against Lashpia. As to the joint work defense, the court found no facts to support the conclusion that the photograph was intended to be a work of joint authorship. That Rodriguez contacted Foster to seek her permission to use the photograph in Allure strongly suggested that she regarded Foster as the sole author and defeated defendants’ claim that their purported “collaboration” demonstrated joint authorship. Moreover, the court held, Rodriguez’s contribution to the work, which consisted solely of selecting its subject matter, was not independently copyrightable. As to the work-for-hire defense, the court held that the photograph did not qualify as an “independent contractor” work for hire, which requires a written agreement—absent here—and noted that the doctrine does not apply to photographs generally. Nor did the facts demonstrate that Foster was employed by Lashpia so that the photograph qualified as an “employee” work for hire.

Defendants, in their reply memorandum in support of their own motion, contended that they had an unrestricted license to use the photograph, as Foster had orally granted permission for its use. The court held, however, that because license is an affirmative defense, defendants were required to plead it in their Answer. By failing to do so—or seeking leave to amend their Answer—defendants forfeited the license defense. The court declined to excuse defendants’ failure to plead a license on the basis that doing so would prejudice Foster. Relying on defendants’ failure to plead the defense while discovery was open, Foster had not deposed Lee or Rodriguez and had not focused on establishing the precise scope of the permission she granted with respect to the photograph’s use. Foster therefore had neither notice of the defense nor an adequate opportunity to respond thereto.

The court denied Foster’s motion as against Lee and Rodriguez, holding that a reasonable juror would not be required to believe the facts presented regarding their supervision over the infringing use and their financial interest in the exploitation of Foster’s copyright. It declined, however, to consider the question of Lee’s and Rodriguez’s personal liability for the purpose of defendants’ motion, as defendants failed to raise this argument until their reply papers and therefore forfeited it. Ultimately, the court denied defendants’ motion in full, on the basis that disputed issues of fact remained as to whether the photograph was first published less than three months before Foster’s copyright registration, which would entitle her to statutory damages and attorney’s fees.